GOODALL et alv.SUWA et al

Board of Patent Appeals and Interferences

Oct 31, 2002

08797620 (B.P.A.I. Oct. 31, 2002)

1The caption for this interference has been changed to reflect the addition of Goodall’s
U.S. Application 10/079,218 to the interference.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 46
Filed by: Trial Section Merits Panel
Box Interference Filed: October 31, 2002
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
BRIAN L. GOODALL, SAIKUMAR JAYARAMAN,
ROBERT A. SHICK, LARRY F. RHODES
Junior Party
(Patent 6,136,499 and U.S. Application No. 10/079,2181),
v.
MITSUHITO SUWA, TORU KAJITA,
SHIN-ICHIRO IWANAGA, TOSHIYUKI OTA
Senior Party,
(Application 08/797,620).
_______________
Patent Interference No. 104,703
_______________
Before: SPIEGEL, TIERNEY and NAGUMO, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
FINAL JUDGMENT
(Decision on Preliminary Motions)
This interference is before a merits panel for a decision on preliminary motions. As
evident from the discussion below, no oral hearing on the merits was required.
Interference No. 104,703
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I. Summary of the Opinion
The parties have agreed to settle this interference. (Submission of Settlement Agreement,
Paper No. 40). In settling the interference, however, the parties have filed several preliminary
motions requesting that the interference be redefined. Specifically, the parties have filed motions
requesting that the count and claim correspondence be modified (Suwa Preliminary Motions 1
and 4, Goodall Preliminary Motion 2), requested priority benefit (Suwa Preliminary Motion 5)
and requested the addition of new claims and an application to the interference (Suwa
Preliminary Motions 2 and 3 and Goodall Preliminary Motion 1). All of the motions filed in this
interference are unopposed. Contingent upon the grant of these motions, Suwa has requested
adverse judgment as to proposed Count A. (Paper No. 37 and Suwa Preliminary Motion 1, Paper
No. 31). Also, contingent upon the grant of these motions, Goodall has requested adverse
judgment as to the two other proposed Counts B and C. (Goodall Response 1, Paper No. 39).
Based on the evidence presented and the reasoning provided, we grant the parties’
motions. Priority of invention is awarded against Suwa for Count A and against Goodall as to
Counts B and C.
II. Findings of Fact
A. Real Parties in Interest
1. Junior Party
F1. Goodall’s U.S. Patent No. 6,136,499 (“‘499”) is said to have been assigned to Sumitomo
Bakelite Co., Ltd. (Goodall’s Notice of Change of Real Party in Interest, Paper No. 18).
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2. Senior Party
F2. Suwa’s U.S. 08/797,620 application (“‘620”) is said to have been assigned to JSR
Corporation. (Notice of Real Party in Interest, Paper No. 5).
B. Accorded Priority Benefit
1. Junior Party
F3. Goodall’s involved ‘499 patent issued on October 24, 2000, from U.S. Application No.
08/812,418, filed March 6, 1997. Solely for the purpose of priority, Goodall has been accorded
benefit of U.S. Provisional Application 60/025,174, filed March 7, 1996. (Notice Declaring
Interference, Paper No. 1, p. 3).
2. Senior Party
F4. Suwa’s involved ‘620 application was filed February 7, 1997. Solely for the purpose of
priority, Suwa ‘620 application has been accorded benefit of the filing dates of:
i. JP 8-46930, filed February 9, 1996
ii. JP 8-227344, filed August 12, 1996
iii. JP 8-352621, filed December 16, 1996
(Notice Declaring Interference, Paper No. 1, p. 4).
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C. The Count and Claim Correspondence
A primary concern reflected in the parties’ motions is the scope of the count in
interference and the claim correspondence. The count and claim correspondence coming into
this decision is provided below.
F5. Count 1, the sole count in interference prior to this decision, read as follows:
A composition according to any one of claims 1, 4, 6, 7 and 12 of U.S. Patent 6,136,499
or
A composition according to claim 2 of U.S. Application 08/797,620
F6. At the time of declaration, the parties’ claims were as follows:
Goodall, U.S. Patent No. 6,136,499: 1-12
Suwa, U.S. Application 08/797,620: 2-22
F7. The claims of the parties which corresponded to Count 1 were:
Goodall, U.S. Patent No. 6,136,499: 1-12
Suwa, U.S. Application 08/797,620: 2-22
F8. The claims of the parties which did not correspond to Count 1, and therefore were not
involved in the interference, were:
Goodall, U.S. Patent No. 6,136,499: None
Suwa, U.S. Application 08/797,620: None
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D. Person of Ordinary Skill in the Art
F9. Generally, the technology involved in this interference relates to polymer chemistry and
more particularly, the field of photolithography and photoresist development. The knowledge
that one skilled in this art would possess is demonstrated by the prior art submitted as evidence,
e.g., Goodall U.S. Patent No. 5,569,730 (SX 1003).

1. Testimony of Toru Kajita
F10. Suwa has submitted two declarations by Toru Kajita, a named inventor of Suwa’s
involved ‘620 application. (Declarations of Toru Kajita, SX 1004 and SX 1018).
F11. According to Suwa, Mr. Kajita received his Bachelor of Science degree from Kyoto
University in 1986. Mr. Kajita is said to have received his Masters Degree in 1988 from Kyoto
University’s Department of Synthetic Chemistry. (Suwa Submission, Paper No. 45).
F12. Mr. Kajita began work at JSR Company, Ltd. in 1988. Mr. Kajita is said to have more
than ten years experience in the field of research and development of photoresist polymer
materials, including photoresists for semiconductor fabrication at JSR Company, Ltd. Mr. Kajita
is said to hold the title of Manager, Research and Development Department at JSR. (Paper No.
45).
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F13. Given Mr. Kajita’s background, we conclude that he is qualified to testify as to the
knowledge of one skilled in the art in the field of photolithography and photoresist development.
2. Testimony of John Sturtevant
F14. Suwa has submitted a declaration of a Mr. John Sturtevant. (SX 1005). In the
declaration, Mr. Sturtevant testifies that he has a Ph.D. in Physical Chemistry and is presently the
Manager of Photolithography Research and Development at Integrated Device Technology. Of
note, Mr. Sturtevant has been the Co-Chairman of the SPIE Microlithography Symposium of the
Advances in Photoresist Technology Conference since 1996. Further, Mr. Sturtevant states that
he has published extensively in the area of polymer physics and polymer chemistry, particularly
with respect to photoresist compositions. (SX 1005, ¶1).
F15. Given Mr. Sturtevant’s background, we conclude that he is qualified to testify as to the
knowledge of one skilled in the art in the field of photolithography and photoresist development.
3. Testimony of Andrew Bell
F16. The parties have submitted testimony from a Mr. Andrew Bell. Mr. Bell is said to have
received a Ph.D. in Organometallic Chemistry from Purdue University in 1985. Mr. Bell
performed research and development in the area of polycyclic olefin polymerization chemistry
for Hercules, Incorporated during the years of 1987 to 1994. From 1994 to 2000, Mr. Bell
performed research and development in the area of polycyclic olefin polymerization chemistry
with a focus on nickel and palladium addition of polycyclic olefins for the B.F. Goodrich
Interference No. 104,703
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Company. Furthermore, Mr. Bell is said to have directed the development of new catalysts and
commercialization efforts involving ruthenium alkylidene derivatives and norbornene- and
dicyclopentadiene-based polymers from 2000 to April 2001 for Cymetech, LLC. (GX 2005, ¶1).
F17. Mr. Bell is said to be an inventor or coinventor of 17 U.S. patents and international
patent applications covering a wide range of subject matter in the fields of polymer science and
catalysis. (GX 2005, ¶1).
F18. Given Mr. Bell’s background, we conclude that he is qualified to testify as to the
knowledge of one skilled in the art in the field of polymer science and catalysis.
III. Opinion
A. Suwa Preliminary Motion 1: Substitute Proposed Counts
Suwa Preliminary Motion 1 requests that the interference be redefined by substituting two
new counts for the existing count and adding a third new count to the interference. (Paper No.
31, p. 2). Goodall does not oppose this motion. Indeed, Goodall has filed a response requesting
the Suwa Preliminary Motion 1 be granted. (Goodall Response 1, Paper No. 39, p. 2).
There are three new proposed counts, A, B and C. Generally, the subject matter of the
new counts is as follows:
Count A: Polymers (“AD”) formed by an addition polymerization reaction.
Count B: Polymers (“ROMP”) formed by a ring opening metathesis polymerization.
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Count C: Polymers (“MA”) having repeat units polymerized from maleic anhydride.
(See Paper No. 31, Attachments A-C, Paper No. 39, p. 3, ¶ 5). According to both Suwa and
Goodall the three polymers, “AD”, “ROMP” and “MA” have distinct structures and
characteristics and define separate patentable inventions from each other. (Paper No. 39, p. 8).
When there are two or more counts in an interference, each count shall define a separately
patentable invention. 37 CFR 1.601(f). Accordingly, a party moving to redefine the interfering
subject matter must show that each proposed count defines a separate patentable invention from
every other count proposed to remain in the interference. (See 37 C.F.R. § 1.637(c)(1)(v),
emphasis added). A separate patentable invention is defined in 37 C.F.R. § 1.601(n) which states
that:
Invention "A" is the same patentable invention as an invention "B" when
invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in
view of invention "B" assuming invention "B" is prior art with respect to
invention "A". Invention "A" is a separate patentable invention with respect to
invention "B" when invention "A" is new (35 U.S.C. 102) and non-obvious (35
U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with
respect to invention "A".
37 CFR § 1.601(n)(emphasis in original). Accordingly, in reviewing the three proposed counts
for separate patentability, we focus on the patentable distinctiveness of the three counts with
respect to each other.
1. The Three Proposed Counts are Separately Patentable from Each Other
a. Differences Between ROMP and AD Polymers
Suwa alleges that ROMP polymers and AD polymers have different alicyclic repeating
Interference No. 104,703
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2 We note that:
A ROMP polymer has a different structure than that of an addition polymer. A ROMP
polymer contains a repeat unit with one less cyclic unit than did the starting monomer. (SX
1001, col. 13, lines 50-52).
units in the polymer backbone. In contrast to AD polymers, as synthesized, Suwa states that
ROMP polymers have unsaturated polymer backbones. As a result, ROMP and AD polymers are
said to exhibit significantly different physical properties, including glass transition temperatures
and thermal stability. (Paper No. 31, ¶ 21).2
Mr. Sturtevant testifies that significant differences in glass transition temperature and
thermal stability between AD and ROMP polymers would have a significant influence on resist
characteristics and could ultimately affect the resolutions that can be achieved using the
photoresist. (SX 1005, ¶4). Mr. Sturtevant’s testimony on this point is consistent with the
written description provided in the Goodall et al., U.S. 5,569,730 patent (“‘730,” SX 1003). For
example, the ‘730 patent states that “[t]he differences in the structure of ROMP and addition
polymers of NB type monomers is evidenced in their properties, e.g., thermal properties.” (SX
1003, col. 2, lines 7-9). Based on Mr. Sturtevant testimony and the statements provided in the
‘730 patent, we conclude that Suwa has demonstrated that the Count A AD polymers and the
Count B ROMP polymers are patentably distinct inventions.
b. Differences Between MA Polymers and AD and ROMP Polymers
Suwa argues that Count C (MA Copolymer) is a separately patentable invention from
Count B (ROMP polymer). According to Suwa, there are structural differences between the two
classes of polymers which patentably distinguish them from one another. Specifically, ROMP
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polymerization is said to proceed by a ring opening mechanism as opposed to the free radical or
addition polymerization techniques used to produce MA copolymers. As a result, the claimed
MA copolymers possess a different alicyclic repeating unit in the polymer backbone. Further, the
claimed MA and ROMP polymer based photoresists are said to differ structurally due to the
presence of a repeating unit polymerized from maleic anhydride in the polymer backbone. (Suwa
Preliminary Motion 1, Paper No. 31, p. 19).
Additionally, Suwa argues that Count C (MA Copolymer) defines a separately patentable
invention from Count A (AD polymer). Suwa notes that Count C is directed to resist
compositions comprising a polymer having an alicyclic skeleton comprising an acid labile
substituted alicyclic repeating unit and a repeating unit derived from maleic anhydride. As such,
Suwa states that the MA copolymer count is a sub-genus of the AD polymer count. (Paper No.
31, p. 20).
According to Kajita, as a result of the differences in the polymer structure of the MA
copolymers, the MA copolymer based resists will generally have superior resist properties as
compared to AD and ROMP polymer based resists. Kajita testifies that MA copolymer based
resists have superior swelling behavior and PAG solubility which can influence the resolution of
the images formed on the resist. (Second Declaration of Toru Kajita, SX 1004, ¶42).
Kajita has cited an article by Ito et al., “Dissolution/Swelling Behavior of Cycloolefin
Polymers in Aqueous Base,” Advances in Resist Technology and Processing XVII, Proceedings
of SPIE Vol. 3999, pp. 2-12 (2000) (hereinafter “the Ito publication”). Based upon the
swelling/dissolution behavior described in the Ito publication, Kajita testifies that significantly
Interference No. 104,703
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higher resolutions can be attained using photoresist compositions comprising MA copolymers
compared to resists comprising AD polymers. (SX 1004, ¶59).
Kajita has also cited an article by Opitz et al., entitled “Polymer Platform Dependent
Characteristics of 193 nm Photoresists,” Proceedings of the SPIE Conference on Advances in
Resist Technology and Processing XVI, SPIE Vol. 3678, March 1999 (hereinafter “the Opitz
publication”). Kajita testifies that the Opitz article describes an MA polymer that displays a
relatively constant PAG concentration throughout the film thickness whereas the AD polymer
film is significantly more variable. According to the testimony of both Kajita and Sturtevant, a
more uniform thickness distribution of photo-acid generator in the photoresist film would allow
for the development of more uniform profiles resulting in substantial improvements in resolution
and imaging performance. (SX, 1004, ¶65; SX1005, ¶ 8).
Kajita further testified that MA copolymer based resists generally have superior resist
properties compared to both AD and ROMP polymer based resists. Indeed, Kajita cites a
photoresist evaluation conducted at his direction and/or under his control. Kajita states that this
evaluation demonstrated that improved resolution can be achieved using MA copolymer based
photoresists compared to alicyclic polymer based photoresists. (SX, 1004, ¶¶65-71).
Based upon the evidence presented, we conclude that Suwa has demonstrated that the
Count C MA polymers are a separate patentable invention from the Count A AD polymers as
well as separately patentable from the Count B ROMP polymers. Accordingly, we grant Suwa’s
request to substitute new Counts A, B and C for Count 1.
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B. Suwa Preliminary Motion 2
Suwa Preliminary Motion 2 requests that the interfering subject matter be redefined under
Rule 633(c)(2) by adding new claim 23 to the involved Suwa ‘620 application. (Suwa
Preliminary Motion 2, Paper No. 32, p. 2). Suwa’s request is not opposed by Goodall.
Suwa new claim 23 is directed to a MA polymer. Suwa claim 23 is the same patentable
invention as new Count C as Count C anticipates Suwa claim 23. (Paper No. 32, p. 5).
Suwa has demonstrated that the ‘620 application provides written descriptive support for
the claimed MA polymer. (Suwa Preliminary Motion 1, Paper No. 31, Appendix, p. 9; Paper No.
32, p. 3, ¶¶ 5-7 and Appendix). The ‘620 application also enables one of ordinary skill in the art
to make and use the claimed MA polymer. (Paper No. 32, p. 3, ¶¶ 5-7 and p. 6). Furthermore,
Suwa has affirmatively stated that “there is no teaching or suggestion in the prior art of a
radiation sensitive resist composition as set forth in proposed Claim 23.” (Paper No. 32, p. 6).
Based on the facts presented, Suwa Preliminary Motion 2 is granted.
C. Suwa Preliminary Motion 3
Suwa Preliminary Motion 3 requests that the interfering subject matter be redefined under
Rule 633(c)(2) by adding new claims 24-41 to the involved Suwa ‘620 application. (Suwa
Preliminary Motion 3, Paper No. 33, p. 1). Suwa’s request is not opposed by Goodall.
Suwa new claims 24-41 are directed to a ROMP polymer. Suwa claims 24-41 define the
same patentable invention as new “ROMP” Count B as Count B anticipates and/or renders
obvious Suwa claim 24-41. (Paper No. 32, p. 3).
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Suwa has demonstrated that the ‘620 application provides written descriptive support for
the ROMP polymer of new claims 24-41. (Suwa Preliminary Motion 1, Paper No. 31, Appendix,
pages 10-19; Paper No. 33, pages 7-16). Furthermore, Suwa has noted that new claim 24 defines
subject matter that is encompassed by claim 2, which was determined to be patentable over the
prior art of record by an examiner. Suwa states that claims 25-41 depend from claim 24 and
likewise would be patentable over the prior art of record. (Paper No. 33, p. 4). Based on the
facts presented, Suwa Preliminary Motion 3 is granted.
D. Suwa Preliminary Motion 4
Suwa claim 18 is directed to a radiation-sensitive resin composition, wherein the amount
of the residual halogen contained in the resin is 3 ppm or less, and the amount of the residual
metal contained therein is 300 ppb or less. Suwa Preliminary Motion 4 moves to have Suwa
claim 18 designated as not corresponding to any count in the interference. (Suwa Preliminary
Motion 4, Paper No. 34, p. 1). Goodall does not oppose.
Generally, Suwa alleges that Suwa claim 18 does not define the same patentable
invention as any other Goodall claim. (Paper No. 34, p. 4). According to Suwa, alicyclic
polymer photoresists can have metal contents well in excess of the limits recited in Suwa claim
18. (Paper No. 34, p. 5). For example, under Kajita’s direction and/or control, an evaluation was
conducted regarding alicyclic polymers polymerized using transition metal catalysts as described
in Goodall’s involved ‘499 patent. According to Kajita, the AD polymer evaluated had a metal
content of almost 8000 ppb prior to washing and filtering. (SX 1004, ¶37). Further, Kajita
Interference No. 104,703
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testified that, even after washing and filtering, the metal content still exceeded 3600 ppb. (SX
1004, ¶38).
Sturtevant has testified that higher levels of metallic contamination on the semiconductor
substrate would result in significantly higher semiconductor device defect and failure rates. (SX
1005, ¶14). Sturtevant also testifies that it is his opinion that the significantly reduced metal
content of the resists as defined in Suwa claim 18 would allow for the manufacture of
semiconductor devices with reduced defect rates and improved device performance. (SX 1005,
¶15).
Based upon the evidence presented, we conclude that Suwa has demonstrated that Suwa
claim 18 does not define the same patentable invention as any corresponding Goodall claim.
Accordingly, we grant Suwa’s request to have Suwa claim 18 designated as not corresponding to
any of the counts in the interference.
E. Suwa Preliminary Motion 5
Suwa Preliminary Motion 5 moves to be accorded an earlier priority benefit date for the
ROMP polymer Count B and the MA copolymer Count C. Specifically, for Count B, Suwa
requests priority benefit of JP Application No. 8-227344 (“‘344”), filed August 12, 1996. For
Count C, Suwa requests benefit of JP Application No. 8-046930 (“‘930”), filed February 9, 1996.
(Suwa Preliminary Motion 5, Paper No. 35, p. 1). Goodall does not oppose Suwa’s requested
priority benefit.
For an earlier-filed application to serve as constructive reduction to practice, “the
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applicant must describe the subject matter of the count in terms that establish that he was in
possession of the later-claimed invention, including all of the elements and limitations presented
in the count, at the time of the earlier filing.” Hyatt v. Boone, 146 F.3d 1348, 1353-54, 47
USPQ2d 1128, 1131 (Fed. Cir. 1998). Moreover, “it is insufficient as written description, for
purposes of establishing priority of invention, to provide a specification that does not
unambiguously describe all limitations of the count.” Id.
1. Priority Benefit for Count B ROMP Polymer
Suwa has demonstrated that the ‘930 application discloses a radiation sensitive
composition comprising a ROMP polymer resin (SX 1022, p. 1, claim 1). Additionally, Suwa
has demonstrated that the ‘930 application discloses a radiation sensitive acid generating agent.
(SX 1022, p. 21, paragraph [0027]). Furthermore, the ‘930 application teaches a method of
making the radiation sensitive resist composition and a method of forming a resist pattern using
the composition. (SX 1022, p. 22, paragraph [0028] and p. 23, paragraph [0029]). Based on the
facts presented, Suwa’s request for priority benefit of the ‘930 filing date of February 9, 1996 for
Count B is granted.
2. Priority Benefit of Count C “MA” Copolymer
Suwa has demonstrated that the ‘344 application provides a description of “a method
comprising radical copolymerizing at least one norbornene derivative (a) and at least one
copolymerizable unsaturated compound such as ethylene or maleic acid anhydride.” (SX 1020,
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paragraph [0015], item (b)). Furthermore, the ‘344 application teaches the synthesis of a
copolymer of a methoxy carbonyl substituted alicyclic monomer and maleic anhydride. (SX
1020, paragraph [0083]). Accordingly, based on the facts presented, Suwa’s request for priority
benefit of the ‘344 filing date of August 12, 1996 for Count C is granted.
F. Goodall Preliminary Motion 1
Goodall requests that Goodall’s U.S. Application No. 10/079,218 (“‘218”), filed on
February 19, 2002 be added to the interference. Goodall also requests that claim 47 of the ‘218
application be designated as corresponding to the MA copolymer Count C.
According to Goodall, no pending or patented Goodall claim is specifically directed to
the subject matter of Count C. (Goodall Preliminary Motion 1, Paper No. 29, p. 6). As
amended, Goodall’s ‘218 application contains a claim 47 that is said to correspond to Count C.
Specifically, Goodall states that Goodall claim 47 is patentably indistinct from Count C. (Paper
No. 29, pages 8-10). According to Goodall, to fully adjudicate the priority of the inventions
defined by Counts A, B and C, it is necessary, inter alia, that Goodall claim 47 be added to the
interference. (Paper No. 29, pages 6-7).
Suwa has joined in Goodall’s Preliminary Motion 1. Specifically, Suwa states that by
adding the Goodall ‘218 application and Goodall claim 47 to the interference as corresponding to
Count C, the goals expressed in 37 C.F.R. §1.601, et. seq. are met, by contesting in a single
interference, all subject matter disclosed and patentable to Goodall and Suwa in the involved
cases. (Suwa Response 1, Paper No. 38).
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As noted above, contingent upon the grant of the various preliminary motions, Goodall
has requested adverse judgment as to proposed Counts B and C. (Goodall Response 1, Paper No.
39). To obviate a future interference between Goodall and Suwa arising from their involved
specifications description of MA copolymers, we grant Goodall Preliminary Motion 1.
G. Goodall Preliminary Motion 2
Goodall moves to have Goodall claims 2, 4, 5 and 7-11 designated as not corresponding
to any existing or proposed count in this interference. (Goodall Preliminary Motion 2, Paper No.
44). According to Goodall, Goodall claims 2, 4, 5 and 7-11 are directed to a separate patentable
invention from Counts A, B and C. Suwa does not dispute this allegation. (Paper No. 44, p. 11).
Goodall states that Goodall claims 2, 4 and 5 are directed to polymer compositions
containing a polymer formed by addition polymerization wherein the polymer has a pendant
perfluorophenyl group on at least one terminal end. (Paper No. 44, p. 6, ¶ 9). Goodall argues
that none of Count A, B or C recites an addition polymer having a pendant perfluorophenyl group
on at least one terminal end. According to Goodall, the presence of the pendant perfluorophenyl
group on at least one terminal end is an indication that the polymer has been formed in the
presence of the nickel-based catalyst EnNi(C6F5)2 (where E represents a neutral 2 electron ligand
donor and C6F5 represents perfluorophenyl) or in the presence of a catalyst formed from the
combination nickel ethylhexanoate, tris(perfluorophenyl)boron and triethylaluminum. (Paper
No. 44, pages 11-12).
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Goodall states that claims 7-11 claim a radiation sensitive composition having polymers
formed by addition polymerization in the presence of a single or multicomponent catalyst system.
(Paper No. 44, p. 7, ¶ 14). Goodall argues that these claims are patentably distinct from Counts
A, B and C as Goodall claims 7-11 recite specific methods of polymerization and catalysts that
are not recited in Counts A, B and C and are not taught or suggested by the prior art. (Paper No.
44, p. 7, ¶ 15).
Goodall states that the multi-component catalysts of the prior art Goodall ‘730 patent
would not generate a radiation sensitive polymer. (Paper No. 44, p. 8, ¶ 19). Further, Goodall
alleges that Suwa’s involved ‘620 application does not claim, teach or suggest the single or
multicomponent catalyst systems as well as the specific methods of polymerization recited in
Goodall claims 7-11. (Paper No. 44, p. 8, ¶ 20).
Mr. Andrew Bell has testified that it would not be obvious to form the addition polymers
having a pendant acid labile group as recited in Goodall claims 2, 4, 5 and 7-11 from norbornene-
functional monomers in view of the catalysts employed in the ‘730 patent, alone or further in
view of the ‘620 application. (GX 2005, ¶ 13). Specifically, Mr. Bell states that there is no
teaching or suggestion in the ‘730 patent of using the disclosed catalysts with norbornene
monomers bearing acid labile groups to form a radiation sensitive polymer. (GX 2005, ¶ 13).
Mr. Bell also testifies that there is no teaching or suggestion in the ‘620 claims for using addition
polymerization catalysts, such as those disclosed in the ‘730 patent, to prepare a radiation-
sensitive resin composition. (GX 2005, ¶ 13). Moreover, Mr. Bell testifies that he is of the
belief that even if the teachings of Suwa’s involved ‘620 application were combined with the
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teachings of the ‘730 patent, the resulting polymer would be different from that of Goodall
claims 2, 4, 5 and 7-11. (GX 2005, ¶ 15).
As mentioned above, Suwa does not oppose Goodall’s request to have claims 2, 4, 5 and
7-11 designated as not corresponding to Counts A, B, and C. On this record, Goodall has
submitted sufficient evidence demonstrating that these claims are patentably distinct from Counts
A, B, and C. Thus, we grant Goodall Preliminary Motion 2.
H. Claim Correspondence
At the beginning of the interference, Suwa’s ‘620 application had claims 2 through 22
pending. As discussed below, Suwa has requested to add claims 23 through 41 to the ‘620
application. Suwa’s request has been granted. As such, Suwa’s ‘620 application contains claims
2 through 41.
Goodall’s involved ‘499 patent contains claims 1 through 12. Goodall has requested the
addition of Goodall U.S. Application 10/079,218 (“‘218”) to the interference. Independent claim
47 is the only pending claim in Goodall ‘218. As discussed above, Goodall’s request to add the
‘218 application to the interference has been granted.
After evaluating the parties respective preliminary motions, the parties’ claims are as
follows:
Suwa ‘620: 2-41
Goodall ‘499: 1-12
Goodall ‘218: 47
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1. Suwa’s Claim Correspondence
Suwa Preliminary Motion 1 proposes the following claim correspondence for Suwa’s
claims:
Count A (“AD”): 2-4, 16, 17 and 19-22
Count B (“ROMP”): 2-17, 19-20 and 24-41
Count C (“MA”): 23
(Paper No. 31, pages 13-14). Goodall has argued in support of Suwa’s proposed claim
correspondence. (Goodall Response 1, Paper No. 39, ¶¶6-8). As we are not aware of any error
in Suwa’s proposed claim correspondence for Suwa’s claims, we adopt Suwa’s proposed claim
correspondence for Suwa’s claims.
2. Goodall Claim Correspondence
Suwa Preliminary Motion 1 proposes the following claim correspondence for the claims
of Goodall’s ‘499 patent:
Count A (“AD”): 1, 3 and 12
Count B (“ROMP”): 6
(Paper No. 31, p. 16). Further, Suwa states that claims 2, 4, 5 and 7-11 of Goodall ‘499 do not
correspond to any proposed count. (Paper No. 31, p. 16). Goodall concurs. (Paper No. 39,
pages 9-12).
Goodall has requested the addition of the ‘218 application to the interference. Further,
Goodall has proposed the following claim correspondence for the claim of the ‘218 application:
Count C (“MA”): 47
(Goodall Preliminary Motion 1, Paper No. 29, p. 1).
Interference No. 104,703
Page No. 21
For purposes of resolving the issues in this interference we adopt the parties’ proposed
Goodall claim correspondence.
IV. Order
ORDERED that Suwa Preliminary Motion 1 to substitute proposed Counts A, B and C
for Count 1 is granted.
FURTHER ORDERED that Suwa Preliminary Motion 2 to add new claim 23 to the
involved Suwa ‘620 application is granted.
FURTHER ORDERED that Suwa Preliminary Motion 3 to add new claims 24-41 to the
involved Suwa ‘620 application is granted.
FURTHER ORDERED that Suwa Preliminary Motion 4 to have Suwa claim 18
designated as not corresponding to any count in the interference is granted.
FURTHER ORDERED that Suwa Preliminary Motion 5 for priority benefit is granted.
FURTHER ORDERED that Goodall Preliminary Motion 1 to add Goodall’s U.S.
Application No. 10/079,218 (“‘218”), filed on February 19, 2002 be added to the interference.
and that claim 47 of the ‘218 application be designated as corresponding to the MA copolymer
Count C is granted.
FURTHER ORDERED that Goodall Preliminary Motion 2 to have Goodall claims 2, 4,
5 and 7-11 designated as not corresponding to Counts A, B and C is granted.
FURTHER ORDERED priority of invention is awarded against Suwa for Count A and
against Goodall as to Counts B and C.
Interference No. 104,703
Page No. 22
FURTHER ORDERED that Suwa is not entitled to a patent containing claims 2-4, 16,
17 and 19-22 of Suwa U.S. Application No. 08/797,620.
FURTHER ORDERED that Goodall is not entitled to a patent containing claim 6 of
Goodall, U.S. Patent No. 6,136,499.
FURTHER ORDERED that Goodall is not entitled to a patent containing claim 47 of
Goodall, U.S. Application No. 10/079,218.
FURTHER ORDERED that a copy of this final decision shall be placed and given a
paper number in the file of Suwa U.S. Application No. 08/797,620, Goodall, U.S. Patent No.
6,136,499, and Goodall, U.S. Application No. 10/079,218
FURTHER ORDERED that the parties are reminded of the provisions of 35 U.S.C.
§ 135(c) and 37 CFR § 1.661.
CAROL A. SPIEGEL )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL P. TIERNEY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
MARK NAGUMO )
Administrative Patent Judge )
Interference No. 104,703
Page No. 23
cc (via Facsimile and First Class Mail):
Attorney for Goodall:
Helen A. Odar
BRINKS HOFER GILSON & LIONE
455 N. Cityfront Plaza Drive
Suite 3600
Chicago, IL 60611-5599
Tel: 312-321-4200
Fax: 312-321-4299

Attorney for Suwa:
Steven B. Kelber
Piper Rudnick
1200 Nineteenth St., NW
Washington DC 20036-2412
Tel: 202-861-3900
Fax: 202-223-2085